Oils International (Pty) Ltd v WM Penn Oils Ltd

• Judge: Hill J, Hiemstra J and Colman J
• Judgment Date: 09 April 1965
• Citation: 1965 (3) SA 64 (T)
• Hearing Date: 24 March 1965

Colman, J.:

This is an appeal against an order of the Registrar of Trade Marks refusing an application by the appellant for the registration in its name of the mark 'Lifesaver' in respect of automotive brake fluid.

A The application was lodged on 14th August, 1962, and thereafter the present respondent filed an objection to the registration, which was, in due course, upheld by the Registrar. I shall, for convenience, refer to the appellant as 'the applicant' and to the respondent as 'the objector'.

The applicant's case, as disclosed in the affidavits filed with the B Registrar, may be summarised in the following terms: The applicant had, for some three years prior to the filing of the application, dealt in brake fluids manufactured by, and bearing the trade marks of, a company called Unico Chemical Company (Pty.), Ltd., and early in 1962 it C was decided that it should, as a matter of policy, market brake fluids under its own trade mark. That decision was taken, presumably, by Dr. Kenneth Mathieson, a director of the applicant Company who, with his wife, holds all the issued shares in that company.

In April, 1962, a discussion took place between Dr. Mathieson and two other persons interested in the marketing of brake fluids, and reference D was made therein to the important part which was played by good quality brake fluids in saving human lives. It then occurred to Dr. Mathieson that the word 'Lifesaver' would be a suitable mark to indicate the quality of the product which his company proposed to market, and that it would be the sort of word which would inspire public confidence in the product.

E This, Dr. Mathieson says in his affidavit, was a spontaneous idea arising out of the discussion which I have mentioned, and he had no knowledge of any intention on the part of the objector to use the word 'Livesaver' as a trade mark in respect of brake fluids until, after the applicant's application for registration had been filed, a letter to F that effect was received from the objector's solicitors. He says that he mentioned his idea immediately to the two persons who were present when it occurred to him, and each of those persons has confirmed, on affidavit, his statement in that regard.

The delay in applying for registration until 14th August, 1962, Dr. G Mathieson explains, by saying, firstly, that the marketing of brake fluid under the contemplated mark was deferred pending the publication of compulsory specifications for brake fluids (which was pending during the first half of 1962) and secondly, that the applicant was preparing designs for containers and printed matter, and had not yet decided H whether to seek registration of the name alone, or whether to combine it, in the application, with emblems.

The objector filed the affidavits of its managing director, Mr. Duff, and Mr. Grayman, a director of Unico Chemical Company (Pty.) Ltd., from which it appears, firstly, that for about six years the objector had been marketing brake fluids manufactured for it by the Unico Company. In about September, 1961, the affidavits go on to say, there was a discussion between the two deponents with regard to the production, and the marketing by the objector, of new heavy duty and extra heavy

Colman J

duty brake fluids of better quality than those then on the market. The objector had, up to then, been selling brake fluid under its own name; but it was agreed that the new fluid should have a new brand name, and A the name agreed upon was 'Lifesaver'. The heavy duty fluid was to be called 'Lifesaver 300' and the extra heavy duty fluid 'Lifesaver 400'.

Neither Mr. Duff nor Mr. Grayman states by whom, when or how the word 'Lifesaver' was devised or thought of as a suitable trade mark. But B nothing turns on this because it was not contended on behalf of either party to the appeal that the other party had sought to filch the name from it. It was common cause between counsel that the appeal should be decided on the footing that each of the two companies had, independently, and in good faith, selected the name 'Lifesaver' for use in connection with products to be marketed by it.

C Mr. Duff and Mr. Grayman went on to refer to certain steps taken by the objector which, it was argued, constituted a user of the mark by it such as to disentitle the applicant to the registration which it sought. I shall deal with those steps later in my judgment.

In its notice of opposition the objector referred to the date of the D application, to its own use of the mark prior to that date, and to the fact that the applicant had at no time made use of the mark. On these averments it based a contention, the wording whereof was later amended, and which, in its amended form, reads as follows:

'By reason of the premises, the objector is the owner of the said mark Livesaver in respect of automotive brake fluid, that applicant is not entitled to claim to be the proprietor of the trade mark, and that he E (sic) has applied for registration in contravention of the objector's common law rights.'

In its presentation of its case to the Registrar, the objector travelled outside the ambit of its notice of opposition and, indeed, persuaded the Registrar to refuse the application on at least one ground which was not covered by the notice. But it would appear that counsel for the F applicant did not, at the hearing a quo, object to any of the objector's evidence or contentions by reason of the fact that they fell outside the scope of the notice of opposition; and at the hearing of the appeal he expressly stated that he was not taking that point against the objector. We are thus free to consider all the contentions and all the material which were placed before the Registrar.

G The relevant statute is Act 9 of 1916. The portion thereof relating to Trade Marks has been repealed by the Trade Marks Act, 62 of 1963, but in terms of sec. 3 (2) of the last-mentioned statute, applications and proceedings commenced under the repealed law are to be dealt with under the provisions of that law. The application with which we are concerned H was made before the enactment of the Act of 1963, and the saving provision therefore operates, as the Registrar pointed out in his judgment.

He refused the application, firstly, because he came to the conclusion that registration was precluded by sec. 140 of the 1916 Act, which reads as follows:

'No scandalous design, and no mark, the use of which would, by reason of its being likely to deceive or...